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Thursday, 25 January 2018

A recent decision of Geoffrey Hobbs QC, sitting as an Appointed Person, has rejected an appeal against the Hearing Officer's decision to refuse to register ALEXANDER as a UK trade mark for mirrors an picture frames, on the ground of bad faith, following an opposition from Paper Stacked Limited.

The applicant in this matter was CKL Holdings NV, a Dutch company which is owned and controlled by Mr Michael Gleissner. Mr Gleissner has previously appeared on the IPKat in connection with a range of cancellation actions which he applied for on a large scale. Indeed, it is fair to say that he has gained some notoriety in trade mark circles.

The Opponent, Paper Stacked Ltd, provided substantial evidence which included the following information:

Mr Gleissner is a director of over 1,200 UK companies, which include Trump Internation Ltd and EUPIO International Ltd

The applicant holds 100s of marks in the US, Benelux and elsewhere.

Many of the marks applied for or registered by the applicant consist of common names, such as ANNA, JESSICA, JULIA, ALAN, HOWARD, CHRISTINE, ELIZABETH, RYAN, PAUL, PETER or other words, such as the names of colours, BLUE, SAND, EBONY, EMERALD. (Mr Hobbs QC noted that 6 of the 8 applications applied for in the UK were opposed by third parties - compared with the usual 4.5% opposition rate).

The applicant has also registered more distinctive names, such as EUIPO and TESLA in the Benelux and holds an international registration for BAIDU.

Other companies controlled by Mr Gleissner are reported to have applied to register marks which are well known in the US or Europe, such as THE HOME DEPOT, ENRON, THE LEARNING CHANNEL and PAN AM.

The Trademarks Manager at another of Mr Gleissner’s companies (who also signed the counterstatement in this case) once listed his job responsibilities on LinkedIn as including ‘manipulating trademarks to reverse hijack domain names through UDRP’, although this comment was subsequently removed.

One of many famous marks
targeted by Mr Gleissner

CKL Holdings relied on the presumption of good faith in trade mark applications and submitted that the substantial evidence provided in the opposition was insufficient to rebut this presumption.

Mr Hobbs QC considered the relevant authorities including the judgment of Arnold J in Red Bull GmbH v Sun Mark Ltd[2012] EWHC 1929 (Ch) at [130] to [138] and the EU General Court's decision in Copernicus Trademarks (Case T‑82/14)ECLI:EU:T:2016:396. The General Court's decision in Copernicus is under appeal to the Court of Justice of the European Union (CJEU) but Hobbs QC nevertheless considered it helpful to the issues in dispute and quoted from the court's observation that "not only the filing strategy practiced by Mr A. is incompatible with the objectives pursued by Regulation No 207/2009, but that it is not unlike the cases of ‘abuse of law’...".

In light of the facts and the various authorities, Mr Hobbs QC had no difficulty in dismissing CKL's appeal.

The Registrar provided some further observations which helped to "reinforce" the Appointed Person's view and may be of interest to the community:

"(i) As at 30th November 2017, various legal entities of which Mr Michael Gleissner is a director, and which communicate from the same email address as the appellant in these proceedings, were a party to 97 live contested trade mark cases before the UK IPO. This is about 5% of all the live contested trade mark cases before the UK IPO.

(ii) The volume and proportion of cases involving Mr Gleissner’s companies has reduced over recent months. At one point they accounted for 8% of all the contested UK trade mark cases.

(iii) Although the various legal entities communicating from the above email address rarely file any factual evidence before the UK IPO, an unusually high proportion proceed to a final decision. The registrar issued 42 final decisions in contested trade mark cases in November 2017. The various legal entities communicating from the appellant’s email address were a party to 8 (nearly 20%) of those decisions.”

3 comments:

A useful case.I am curious about the opponent who brought it Paper Stacked Ltd. Its director has no less than 34 companies and I've seen some of those involved in strange oppositions. What goes on? We should be told

It reminds me of a similar case in France years ago. For instance, when for instance rumours of merger came up, the chap rushed to file trade marks which could be used after the merger. One example was the merger between Pechiney and Ugine-Kuhlmann. The trade mark PUK was filed very swiftly. The little game went on for a while, until a French court considered this type of behaviour as being parasitic.

In the present case, and in view of the comments above, I would think that two parasites are parasiting each other!

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